Case 6:21-cv-01101-ADA Document 67 Filed 10/14/22 Page 1 of 9
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`UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`AIRE TECHNOLOGY LTD.,
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`Plaintiff,
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`v.
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`APPLE INC.,
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`Case No. 6:21-cv-01101-ADA
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`JURY TRIAL DEMANDED
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`Defendant.
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`PLAINTIFF AIRE TECHNOLOGY LTD.’S REPLY IN SUPPORT OF ITS MOTION TO
`AMEND PRELIMINARY INFRINGEMENT CONTENTIONS
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`Case 6:21-cv-01101-ADA Document 67 Filed 10/14/22 Page 2 of 9
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................................... 1
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`ARGUMENT ....................................................................................................................... 1
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`A. Aire diligently sought amendment ...................................................................................... 1
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`B. Adding claim 13 of the ’249 Patent is Important ................................................................ 3
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`C. There is no prejudice to Apple and any prejudice may be cured ........................................ 4
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`CONCLUSION ................................................................................................................... 5
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`I.
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`II.
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`III.
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`i
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`Case 6:21-cv-01101-ADA Document 67 Filed 10/14/22 Page 3 of 9
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`Cases
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`TABLE OF AUTHORITIES
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`Commonwealth Sci. & Indus. Rsch. Organisation v. Mediatek Inc.,
`No. 6:12-CV-578, 2014 WL 12616679 (E.D. Tex. Aug. 4, 2014) .............................................. 3
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`Levine v. Samsung Telecomms. Am., LLC,
`No. 2:09-CV-372, 2012 WL 13009216 (E.D. Tex. July 25, 2012) ............................................. 2
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`Nomadix, Inc. v. Guest-Tek Interactive Ent. Ltd.,
`No. 2:19-CV-04980-ABF-FMX, 2020 WL 1039003 (C.D. Cal. Jan. 3, 2020) ........................... 4
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`Orion IP, LLC v. Home Depot USA, Inc.,
`No. 2:05-CV-306, 2005 WL 8161153 (E.D. Tex. Oct. 7, 2005) ................................................. 4
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`Statutes
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`35 U.S.C. § 271 ............................................................................................................................... 2
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`Other Authorities
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`Charles Alan Wright, Arthur R. Miller & Edward H. Cooper,
`Federal Practice and Procedure § 4409 (3d ed. 2017) ................................................................. 4
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`ii
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`Case 6:21-cv-01101-ADA Document 67 Filed 10/14/22 Page 4 of 9
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`I.
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`INTRODUCTION
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`Plaintiff Aire Technology Limited’s (“Aire”) Motion to Amend its Preliminary
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`Infringement Contentions is supported by good cause and should be granted. Apple’s opposition
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`(Dkt. No. 66 (“Opp.”)) does not undercut the fact that all four factors for evaluating good cause
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`weigh in Aire’s favor. Apple complains that Aire should have done less diligence and asserted
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`claim 13 of the ’249 Patent merely based on a February 2022 press release announcing Apple’s
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`“plans to introduce” the accused Tap to Pay feature “[l]ater this year.” Dkt. No. 66-2 at 1-2. But
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`a sparse press release noting a plan to introduce a feature at some unspecified time does not
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`establish that Apple made, used, offered to sell, or sold the infringing feature. Rather, Aire
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`diligently tracked Apple’s roll-out of its Tap to Pay feature in Summer 2022, and promptly
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`provided a claim chart to Apple once Aire confirmed that the feature was being used in the United
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`States and solidified its belief of infringement through observing its use in the marketplace.
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`Apple’s other arguments are unpersuasive. Adding claim 13 to this case is important to
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`avoid a wasteful second litigation—which would not be precluded by the doctrine of claim
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`splitting because Aire’s claim arose after the pleadings closed in this action. Apple is also not
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`prejudiced by the addition of claim 13 given the revised Scheduling Order (Dkt. No. 61), which
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`provides sufficient time for any additional discovery and to address any new claim construction
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`issues. Indeed, Aire has already agreed that Apple may (1) have additional time to file its final
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`invalidity contentions and (2) brief additional claim construction terms. Thus, to the extent there
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`is any prejudice, the time left in the Scheduling Order is more than sufficient to cure that prejudice.
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`II.
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`ARGUMENT
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`A. Aire diligently sought amendment
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`Apple argues that because it announced in February 2022 its intention to release the
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`accused Tap to Pay feature sometime later that year, that Aire should have asserted claim 13 of the
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`’249 Patent in February 2022. Opp. at 4. Not so. In Apple’s February 8, 2022 Press Release, it
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`merely “announced plans to introduce Tap to Pay on iPhone.”1 Dkt. No. 66-2 at 1-2 (noting
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`“Later this year, US merchants will be able to accept Apple Pay” and “[o]nce Tap to Pay on iPhone
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`becomes available….”). In other words, Apple simply noted that it had “plans” to release its Tap
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`to Pay feature in February 2022—it did not make the feature available at that time. Additionally,
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`the February 2022 Press Release explains that the feature would first be available in a limited
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`capacity through a single payment platform in the “spring” of 2022 and that “[a]dditional payment
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`platforms and apps will follow later this year.” Id. at 2. As such, Aire had no other facts in
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`February 2022 to conclude that the Tap to Pay feature was made, used, offered for sale, or actually
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`sold to consumers that could serve as the basis for a claim of patent infringement pursuant to 35
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`U.S.C. § 271. And, it is for this very reason that Aire had to confirm the “real-world” use of the
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`feature to add claim 13 of the ’249 Patent to its preliminary infringement contentions.
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`Further, Apple complains that “Aire’s amendment does not rely on any purported
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`investigation of ‘real-world use’” and cites “[s]imiliar disclosures [that] appear in Apple’s
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`February 8, 2022 press release….” Opp. at 5. But without any real-world investigation of the use
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`of the Tap to Pay feature, there was no way for Aire to know that it could rely on certain
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`representations and depictions in Apple’s documents to ensure Apple was on notice of its
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`infringement theory.2
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`Apple also maintains that Aire’s diligence arguments should somehow be disregarded
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`because Aire’s counsel did not divulge the specific “details of its [] ‘real world’ investigation.”
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`1 All emphasis added unless stated otherwise.
`2 This case is not like Levine because, in that case, the “Plaintiff delayed six months or more after
`the release of the phones at issue before moving for leave to amend.” Levine v. Samsung
`Telecomms. Am., LLC, No. 2:09-CV-372, 2012 WL 13009216, at *3 (E.D. Tex. July 25, 2012).
`Here, Aire sought to amend contemporaneously with the release of Apple’s Tap to Pay feature.
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`2
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`Opp. at 1, 6. But the details of Aire’s investigation are not relevant—those details do not change
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`the fact that Apple first made the feature available for merchants and retailers in Summer 2022
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`and, prior to then, there was no way for Aire to confirm an act of infringement pursuant to 28
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`U.S.C. § 271. Dkt. No. 63-1 (Hollander Decl.) ¶¶ 2-4.
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`B. Adding claim 13 of the ’249 Patent is Important
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`Adding Claim 13 is important to capture Apple’s infringement through its new Tap to Pay
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`feature. Claims 1-12 of the ’249 Patent “are directed to a ‘portable data carrier,’” which acts as
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`the device used to conduct a secure digital transaction (such as a chip card or mobile device).
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`Apple’s Tap to Pay feature enables an iPhone to operate in an entirely new way—a payment
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`“terminal,” such as a credit card reader. Only claim 13 of the ’249 Patent addresses a “terminal,”
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`meaning it claims a different invention and addresses a completely different accused functionality
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`that is otherwise not at issue in the case. To hold otherwise would not fully resolve the parties’
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`dispute concerning Apple’s infringement of the ’249 Patent and require a separate lawsuit—which
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`is a wasteful use of the parties’ and Court’s resources. See Commonwealth Sci. & Indus. Rsch.
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`Organisation v. Mediatek Inc., No. 6:12-CV-578, 2014 WL 12616679, at *2 (E.D. Tex. Aug. 4,
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`2014) (“[I]t is important for the Court and the parties to deal with all possible infringement claims
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`under the ’069 Patent in the instant case, rather than requiring additional litigation.”).
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`Apple is wrong that Aire would be precluded from bringing a separate action based on the
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`doctrine of claim splitting. Opp. at 7. Even under Apple’s distorted view that Aire should have
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`known that its yet-to-be-released feature was infringing in February 2022, Aire’s cause of action
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`on claim 13 of the ’249 Patent “accrued after the filing of the operative complaint.” Nomadix, Inc.
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`v. Guest-Tek Interactive Ent. Ltd., No. 2:19-CV-04980-ABF-FMX, 2020 WL 1039003, at *2 (C.D.
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`Cal. Jan. 3, 2020) (denying motion to dismiss for improper claim splitting); see also 18 Charles
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`Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal Practice and Procedure § 4409 (3d
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`ed. 2017) (“Most cases rule that an action need include only the portions of the claim due at the
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`time of commencing that action….”). Here, the operative complaint was filed on October 22, 2021
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`and Apple filed its answer on January 6, 2022. Thus, under Apple’s theory, Aire’s cause of action
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`on claim 13 would have first accrued nearly 4 months after the complaint was filed and over a
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`month after the pleadings were closed. Under these facts, Apple is wrong that the doctrine of
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`claim splitting would foreclose a second action against Apple on claim 13 of the ’249 Patent.3
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`C. There is no prejudice to Apple and any prejudice may be cured
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`Apple primarily complains that it is prejudiced by the addition of claim 13 because it
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`decided to challenge only claims 1-12 in its IPR petition for the ’249 Patent. Opp. 8-10. Apple
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`made a strategic decision not to include claim 13 in its IPR petition. Regretting a strategic decision
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`is not prejudice. And, in any event, Apple was notified on September 8, 2022 of Aire’s intention
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`to move for leave to add claim 13 of the ’249 Patent to this case—meaning it had 6 weeks left on
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`the one-year statutory deadline to file a follow-on IPR petition. Hollander Decl. ¶ 5.
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`Next, Apple complains that adding claim 13 of the ’249 Patent will “require reopening
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`claim construction discovery and briefing” because Apple purports there is potentially a claim
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`construction dispute regarding the phrase reciting a device “arranged to cause a user to select one
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`of at least two possible different quality authentication methods.” Opp. at 9. While it is unclear
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`to Aire what “dispute” Apple maintains exists, there is plenty of time over the next seven months
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`before the May 16, 2023 Markman hearing to address any purported claim construction dispute.
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`3 Apple’s reliance on Orion IP is misplaced. Opp. at 7-8. There, the court recognized that “this is
`not a situation where a plaintiff desires to assert new patents or brings new infringement
`contentions based on information previously unavailable.” Orion IP, LLC v. Home Depot USA,
`Inc., No. 2:05-CV-306, 2005 WL 8161153, at *1 (E.D. Tex. Oct. 7, 2005). Here, Aire would be
`forced to bring a second action “based on information previously unavailable.” Id.
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`4
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`Dkt. No. 61. As Aire has explained, it is willing to work with Apple and the Court to account for
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`any supplemental claim construction discovery and briefing that may be needed. Hollander Decl.
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`¶ 6. And, there is no prejudice to Apple to address a claim construction issue that it would have
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`otherwise briefed in its initial opening claim construction brief.
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`Apple’s argument that the addition of claim 13 will somehow “waste the parties’ and
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`Court’s resources by expanding—rather than focusing—the case” is unpersuasive. Opp. at 9.
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`What would be wasteful is a second lawsuit asserting only claim 13 of the ’249 Patent—not merely
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`adding it to this case, where the same accused products are already at issue. And, if (as Apple
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`maintains), “claim 13 requires establishing the same infringement proof that Aire would need to
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`show for claim 1” and involves “the subject matter of already-asserted claims 1-12” (Opp. at 5, 9),
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`then any additional fact discovery is limited in scope and not prejudicial.
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`Relatedly, Apple’s assertions regarding the similarities between claims 1-12 and claim 13
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`also mean that any prejudice to Apple in amending its invalidity contentions is minimal. Certainly,
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`if the claims are as similar as Apple contends, then it is reasonable to expect that Apple will rely
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`largely on the same prior art that it has already asserted in this case. Any prejudice with respect
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`to Apple’s invalidity contentions can be cured by its request to extend the Final Invalidity
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`Contentions deadline to January 31, 2023, which Aire does not oppose.4
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`III. CONCLUSION
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`For these reasons, Aire respectfully requests that the Court grant Aire’s Motion.
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`4 This Court’s standard practice is that the same deadline applies to final infringement and final
`invalidity contentions. See Standing Order Governing Proceedings (OGP) 4.2—Patent Cases,
`Appendix A. Because claim 13 will involve some additional fact discovery, Aire requests that the
`Final Infringement Contentions deadline also be extended to January 31, 2023 to correspond with
`Apple’s Final Invalidity Contentions deadline.
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`5
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`Case 6:21-cv-01101-ADA Document 67 Filed 10/14/22 Page 9 of 9
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`Dated: October 14, 2022
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`Respectfully submitted,
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`By: /s/ Brett E. Cooper
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`Brett E. Cooper (NY SBN 4011011)
`bcooper@bc-lawgroup.com
`Seth Hasenour (TX SBN 24059910)
`shasenour@bc-lawgroup.com
`Drew B. Hollander (NY SBN 5378096)
`dhollander@bc-lawgroup.com
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`BC LAW GROUP, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`Tel.: (212) 951-0100
`Fax: (646) 293-2201
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`Attorneys for Plaintiff Aire Technology
`Limited
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`CERTIFICATE OF SERVICE
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`I certify that this document is being served upon counsel of record for Defendant on
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`October 14, 2022 via electronic service.
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`/s/ Brett E. Cooper
`Brett E. Cooper
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`6
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